Ex Parte Simpson et al

Patent Trial and Appeal Board

Sep 21, 2017

13033000 (P.T.A.B. Sep. 21, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/033,000 02/23/2011 Shell S. Simpson 82265171 8015
22879
HP Tnr
7590 09/25/2017 EXAMINER
3390 E. Harmony Road
Mail Stop 35
SENSENIG, SHAUN D
FORT COLLINS, CO 80528-9544 ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/25/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ipa.mail@hp.com
barbl@hp.com
y vonne.bailey @ hp. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHELL S. SIMPSON and PAUL L. JERAN
Appeal 2016-005505
Application 13/033,000
Technology Center 3600
Before THU A. DANG, ERIC S. FRAHM, and LINZY T. McCARTNEY,
Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4, 6—8, and 10-18, which are all the claims
pending and rejected in the application. Claims 5 and 9 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-005505
Application 13/033,000
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to the
identification of regions/locations including unauthorized products. See
generally Spec. 1, Abs. Claims 1 (computing device), 8 (machine readable
storage device with instructions), and 12 (method) are independent, and
claim 1 is exemplary (reprinted below with emphases and bracketed lettering
added):
1. A computing device for identifying regions in
which unauthorized products are available, the computing
device comprising:
a processor; and
a memory comprising instructions which, when executed,
cause the processor to:
access a request for verification of authenticity of a
product, the request associated with a verification code
printed on the product and location data identifying a
physical location of the product;
determine, based on analysis of the request and a
plurality of previous requests, whether a particular region
including the physical location identified by the location
data has at least a threshold likelihood of being a region
in which unauthorized products are available; and
[A] construct boundaries of the particular region
to 1) have less than a first area and 2) include at least a
threshold number of invalid requests for verification
within the boundaries.
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Application 13/033,000
References and Rejections
(1) Claims 1—4, 6—8, and 10-18 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. Final Act. 2-4; Ans. 2-4, lb-
19.
(2) Claims 1—4, 6—8, and 10-18 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Sangal (US 2011/0225100 Al; published Sept.
15, 2011) and Junger (WO 02/49257 A2; published June 20, 2002). Final
Act. 4—13; Ans. 4-13, 19-23.
(3) Claims 16—18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sangal, Junger, and Czajkowski (US 8,046,763 Bl; issued
Oct. 25, 2011). Final Act. 13—16; Ans. 13—16.
ANALYSIS
35 U.S.C. §101
We have reviewed the Examiner’s rejection in light of Appellants’
arguments in the Briefs. For the reasons discussed below, as well as the
reasons provided by the Examiner in the Final Rejection (Final Act. 2-4) and
the Examiner’s Answer (Ans. 2-4, 16—19), we are not persuaded by
Appellants’ arguments (App. Br. 6—22; Reply Br. 1—9) that the Examiner
erred in rejecting claims 1—4, 6—8, and 10-18 under 35 U.S.C. § 101. We
disagree with Appellants’ arguments, and agree with and adopt the
Examiner’s findings and conclusions in (i) the action from which this appeal
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Application 13/033,000
is taken and (ii) the Answer to the extent they are consistent with our
analysis below.* 1
The Examiner rejects the claims under 35U.S.C. § 101 because they
are directed to non-statutory matter, as the claims amount to an abstract idea
or combination of abstract ideas. See Final Act. 2-4; Ans. 2-4. In
particular, the Examiner finds the claims are directed to the abstract ideas of
(i) determining regional activity based on statistics, which is a method of
organizing human activity using mathematical relationships; and (ii)
requesting, accessing, and comparing data. See Final Act. 3; Ans. 3. The
Examiner further finds the claims use generic computer components to
perform generic computer functions. See Final Act. 3^4; Ans. 3—4, 18—19.
Appellants argue the Examiner erred. See App. Br. 6—22; Reply Br. 1—9.
Appellants have not persuaded us of error. Section 101 of the Patent
Act provides “[wjhoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title.” 35 U.S.C. § 101. That provision “contains
an important implicit exception: Laws of nature, natural phenomena, and
1 Appellants primarily argue independent claim 1 (see App. Br. 7—21; Reply
Br. 1—7), and rely on the arguments presented for claim 1 as to the
patentability of remaining independent claims 8 and 12 (see App. Br. 21—22;
Reply Br. 9). Claims 1, 8, and 12 contain similar subject matter and each
recite similar features as claim 1 reprinted above. Therefore, we select claim
1 as representative of the group of claims rejected under 35 U.S.C. § 101
(claims 1—4, 6—8, and 10—18). We consider Appellants’ separate argument
presented as to claim 2 (see App. Br. 22) to be a nominal argument
amounting to simply stating what the claim recites, and therefore group
claim 2 with claim 1.
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Appeal 2016-005505
Application 13/033,000
abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CISBanklnt’l,
134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the
Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
“[w]hat else is there in the claims before us?” To answer that
question, we consider the elements of each claim both
individually and “as an ordered combination” to determine
whether the additional elements “transform the nature of the
claim” into a patent-eligible application. We have described
step two of this analysis as a search for an “‘inventive concept’”
—i.e., an element or combination of elements that is “sufficient
to ensure that the patent in practice amounts to significantly
more than a patent upon the [ineligible concept] itself.”
Alice Corp., 134 S. Ct. at 2355 (second and third alterations in
original) (citations omitted).
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLCv.
Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
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Alice Step One
Regarding step one of Alice, Enfish held that the “directed to” inquiry
asks not whether “the claims involve a patent-ineligible concept,” but instead
whether, “considered in light of the specification,. . . ‘their character as a
whole is directed to excluded subject matter.’” Enfish, 822 F.3d at 1335.
Regarding improvements to computer-related technology, the Court in
Enfish explained as follows:
We do not read Alice to broadly hold that all improvements in
computer-related technology are inherently abstract and,
therefore, must be considered at step two. Indeed, some
improvements in computer-related technology when
appropriately claimed are undoubtedly not abstract, such as a
chip architecture, an LED display, and the like. Nor do we
think that claims directed to software, as opposed to hardware,
are inherently abstract and therefore only properly analyzed at
the second step of the Alice analysis. Software can make non­
abstract improvements to computer technology just as hardware
improvements can, and sometimes the improvements can be
accomplished through either route. We thus see no reason to
conclude that all claims directed to improvements in computer-
related technology, including those directed to software, are
abstract and necessarily analyzed at the second step of Alice,
nor do we believe that Alice so directs. Therefore, we find it
relevant to ask whether the claims are directed to an
improvement to computer functionality versus being directed to
an abstract idea, even at the first step of the Alice analysis.
Enfish, 822 F.3d at 1335. Thus, we determine whether the claims “focus on
a specific means or method that improves the relevant technology” or are
“directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery.” McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
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Application 13/033,000
In the instant case, in rejecting the claims under 35 U.S.C. § 101, the
Examiner finds, and we agree, that claim 1 is directed to the abstract ideas of
(i) determining regional activity based on statistics, which is a method of
organizing human activity using mathematical relationships; and (ii)
requesting, accessing, and comparing data/information. See Final Act. 3;
Ans. 3. The recitation in claim 1 on appeal of a generic computing device
used to operate on data relating to fundamental economic/business practices
“merely invoke[s] generic processes and machinery.” See Final Act. 3; Ans.
3.
Specifically, we agree with the Examiner’s determination that claim 1
is drawn to an abstract idea or combination of abstract ideas because the
numerous claim limitations recite generally the use of a general purpose
computer including a system with a memory and processor. The memory is
claimed to perform three operations on data: (1) accessing a request that is
associated with (a) a verification code and (b) location data; (2) determining,
based on analysis of data, if a threshold has been met (i.e., a comparison);
and (3) constructing boundaries based on the analysis (see claim 1). Using a
generic computer to organize human activity and perform long-standing
fundamental economic practices such as (i) identifying regions where
unauthorized products are available, and (ii) construct boundaries for a
particular region that meet certain criteria consists of abstract ideas.
Operating on data using a generic computer (accessing, analyzing,
comparing) are abstract ideas. Thus, we find the claims are not directed to
an improvement to computer functionality, but are directed to an abstract
idea or combination of abstract ideas.
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Application 13/033,000
To the extent that claim 1 recites (i) identifying regions where
unauthorized products are available, and (ii) constructing boundaries for a
particular region that meet certain criteria, we note that fundamental
economic and conventional business practices have been held to be abstract
ideas that are patent-ineligible. See Alice, 134 S. Ct. at 2357; Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Enflsh, 822 F.3d at 1335 (“fundamental
economic and conventional business practices are often found to be abstract
ideas, even if performed on a computer”).
Specifically, at least the following decisions from our reviewing court
have found many types of fundamental commercial practices patent
ineligible: OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed.
Cir. 2015), cert, denied mem., 136 S. Ct. 701 (2015) (offer-based price
optimization); buy Safe, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)
(transaction guaranty); Personalized Media Communications, L.L.C. v.
Amazon, Inc., 671 F. App’x. Ill (Fed. Cir. 2016) (mem.) (receiving
instructions for ordering); Macropoint, LLC v. Fourkites, Inc., 671 F. App’x
780 (Fed. Cir. 2016) (mem.) (tracking freight); Wireless Media Innovations,
LLC v. Maher Terminals, LLC, 636 F. App’x 1014 (Fed. Cir. 2016) (mem.)
(monitoring shipping containers); America s Collectibles Network Inc. v.
Jewelry Channel, Inc. USA, 672 F. App’x 997 (Fed. Cir. 2017) (mem.)
(conducting reverse auction by adjusting price and inventory); and Easy Web
Innovations, LLC v. Twitter, Inc., No. 2016-2066, 2017 WL 1969492 (Fed.
Cir. 2017) (receiving, authenticating, and publishing data). In this light, the
inventory management and fulfillment services recited in the claims on
appeal (such as authenticating a merchant and receiving orders for, storing,
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and shipping/conveying inventory items) are commercial practices that are
economic and fundamental in nature.
Considering the claim elements individually and as an ordered
combination, the claims do no more than simply instruct the practitioner to
implement the abstract idea on a generic computer or processer. Alice, 134
S. Ct. at 2359; Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir.
2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible.”).
The Federal Circuit has also “treated collecting information, including
when limited to particular content (which does not change its character as
information), as within the realm of abstract ideas.” Elec. Power, 830 F.3d
at 1353 (emphasis added); see also Internet Patents, 790 F.3d at 1348-49;
OIP Techs., 788 F.3d at 1363; Content Extraction & Transmission LLC v.
Wells Fargo Bank, Natl Ass n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). “In a
similar vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.” Elec.
Power, 830 F.3d at 1354 (emphasis added); see also In re TLI Commc ’ns.
LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). “And we have
recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis.” Elec. Power, 830 F.3d at 1354 (emphasis added);
see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714—15 (Fed. Cir.
2014).
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The rejected claims “fall into a familiar class of claims ‘directed to’ a
patent-ineligible concept.” Elec. Power, 830 F.3d at 1353. Contrary to
Appellants’ arguments (App. Br. 7—18; Reply Br. 1—7), the claims are
similar to the claims of Electric Power, and are focused on the combination
of abstract-idea processes or functions. See Elec. Power, 830 F.3d at 1354.
Appellants’ arguments that the Examiner has failed to make a prima
facie case of unpatentability because the Examiner’s identification of an
abstract idea in the claims is facially insufficient and overbroad are
unpersuasive. App. Br. 7—18. There is, however, no requirement that the
Examiner provide any such evidence in order to make a prima facie case
under § 101. Instead, the Federal Circuit has held that the USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, “together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(alteration in original) (quoting 35 U.S.C. § 132). Here, in rejecting claim 1
under § 101, the Examiner notified Appellants of the reasons for the
rejection “together with such information ... as may be useful in judging of
the propriety of continuing the prosecution of [the] application.” 35 U.S.C.
§ 132. The Examiner states a general, and adequate, rationale that applies to
computing device claim 1. Thus, we find that the Examiner set forth a prima
facie case of unpatentability.
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Application 13/033,000
Alice Step Two
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination”’
to determine whether there are additional elements that ‘“transform the
nature of the claim’ into a patent-eligible application.” Alice Corp., 134 S.
Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297—98). For claims to pass
muster, “at step two, an inventive concept must be evident in the claims.”
RecogniCorp, LLCv. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
Regarding Alice step two, contrary to Appellants’ assertion (App. Br.
18—21; Reply Br. 8—9), Appellants have not shown the claims in this case
require an arguably inventive set of components or methods, or invoke any
assertedly inventive programming. See Elec. Power, 830 F.3d at 1355.
Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer, network,
and display technology for collecting, analyzing, and presenting the desired
information. See Elec. Power, 830 F.3d at 1354. Such invocations of
computers and networks that are not even arguably inventive are
“insufficient to pass the test of an inventive concept in the application” of an
abstract idea. See Elec. Power, 830 F.3d at 1355 (quoting buySafe, 765 F.3d
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at 1353). Instead, we agree with the Examiner that claim 1 uses generic
computer components to perform generic computer functions. See Final
Act. 3^4; Ans. 3—4, 18—19. Specifically, we agree with the Examiner (Ans.
18) that Appellants’ Specification supports the use of only a generic
computer to achieve the objects of the invention (Spec. 13, 20). In fact,
paragraph 13 of Appellants’ Specification specifically states “Computing
device 100 [Fig. 1] may be, for example, a workstation, a server, a notebook
computer, a desktop computer, an all-in-one system, a s[t]ate computing
device, or any other computing device suitable for execution of the
functionality.” Spec. 113 (emphasis added).
Dependent claim 2, argued separately (see App. Br. 22), additionally
recites “determin[ing] whether a request for verification of authenticity is
valid.” The Examiner finds, and we agree, Appellants’ argument to be
conclusory and not supported by any evidence (Ans. 19). Further,
Appellants provide no reply to the Examiner’s response.
Summary
In view of the foregoing, we sustain the Examiner’s rejection under 35
U.S.C. § 101 of representative claim 1, as well as claims 2-4, 6—8, and 10—
18 grouped therewith.
35 U.S.C. §103
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contentions (App. Br. 23—27; Reply Br. 9—11) that the Examiner erred in
finding the cited portions of Sangal (Figs. 6, 7, 36, 46) teach limitation
[A] recited in claim 1 (including construction of boundaries), and as
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Application 13/033,000
similarly recited in remaining independent claims 8 and 12.2 Paragraph 46
of Sangal has the closest teaching, but it merely discloses allowing a user to
view verifications by region, not allowing boundaries to be constructed as
claimed. Here, in that the Examiner’s finding is not well supported by the
express disclosure of the Sangal reference and relies on conjecture, such
conjecture would require us to resort to speculation, unfounded assumptions,
or hindsight reconstruction. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967). We will not resort to such speculation or assumptions to cure the
deficiencies in the factual basis in order to support the Examiner’s
rejections.
In view of the foregoing, we do not sustain the Examiner’s
obviousness rejection of (i) 1—4, 6—8, and 10—18 under 35 U.S.C. § 103(a) as
being unpatentable over Sangal and Junger; and (ii) claims 16—18 under 35
U.S.C. § 103(a) as being unpatentable over Sangal, Junger, and Czajkowski,
which rely on the erroneous findings as to Sangal.
DECISION
We affirm the Examiner’s rejection of claims 1—4, 6—8, and 10—18
under 35 U.S.C. § 101.
We reverse the Examiner’s obviousness rejections of claims 1—4, 6—8,
and 10-18 under 35 U.S.C. § 103(a).
2 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner’s decision to reject all of the
pending claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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